The Supreme Court’s Alice Decision on Patent Eligibility of Computer-Implemented Inventions: Finding an Oasis In the Desert

Guest Post by Donald S Chisum, Director of the Chisum Patent Academy and author of Chisum on Patents.

In Alice (June 19, 2014), the Supreme Court held that the two step framework for determining the Section 101 patent-eligibility of a patent claim, which the Court previously articulated in the 2012 Mayo decision on the patentability of a diagnostic method, applied to computer-implemented inventions. Thus, one determines: (1) does the claim recite an ineligible concept (natural phenomena, natural law or abstract idea), and (2) if so, does the claim recite sufficient additional elements to make the claim one to an application of the concept, rather than to the concept itself?

On Mayo step one, Alice held that the claims at issue were to an abstract idea, an “intermediated settlement.” On step two, it held that “merely requiring generic computer implementation” did not “transform that abstract idea into a patent-eligible invention.” Thus, claims to a method, a computer system configured to carry out the method, and a computer-readable medium containing program code for performing the method all fell invalid under Section 101.

I considered but then reconsidered entitling this comment “Alice in Wonderland.” For, indeed, the Supreme Court’s chain of decisions creating a judicial exception to the statute defining patent eligible subject matter (35 U.S.C. § 101) and holding unpatentable claims to algorithms and abstract ideas, stretching from Benson in 1972 to Alice in 2014, is wondrous. But I will not here review the “big picture,” including the fundamental flaws in the chain; I and others have already done that.

Instead, my focus is on the “small picture,” the every day problem: does the Alice opinion provide some meaningful guidance to fill the near void left by the Court in its prior Mayo and Bilski decisions? Those decisions provided no definition of an “abstract idea” (or “law of nature”) and little direction on, precisely, how much “more” was required for the transformation.

The Court’s fuzz left stranded in a desert of uncertainty an array of feet-on-the-ground decision makers, from inventors to rights owners to patent professionals drafting and amending claims to examiners to PTO officials to licensing negotiators to litigators to district court judges to federal circuit judges to treatise authors.

Positive news. At least on first analysis of Alice, I find some additional guidance, perhaps enough to lead us toward an oasis in the desert.

In particular, the Alice opinion supports the following proposition: a novel and unobvious solution to a technical problem is not an “abstract idea,” and a claim drawn to such a solution, even if broad, is not subject to the Mayo framework (though, of course, it is subject to scrutiny for disclosure support).

The Alice opinion does not state the proposition directly. The Court expressly indicated that it did not need to “delimit the precise contours of the `abstract ideas’ category” because the concept at issue was so similar to that in Bilski. But the proposition is fairly inferred from the Court’s rejection of the patent owner’s argument that the intermediated settlement concept in its claims was not an “abstract idea” within the implicit exception to Section 101 and from its novel description of the prior Diehr decision.

Based on prior Supreme Court cases and language in Mayo, the patent owner argued that the definition of “abstract ideas” for Section 101 was: “preexisting, fundamental truths that exist in principle apart from any human action.” The Court disagreed because that definition did not fit Bilski, which held that risk hedging was an abstract idea. Hedging was a “longstanding commercial practice” and a “method of organizing human activity,” but not a “truth” about the natural world that “always existed.” Hedging and the similar concept of intermediated settlement were abstract ideas because they were “fundamental economic practices.”

Thus, concepts that constitute abstracts ideas fall into two categories. First are mathematical equations, mathematical formulae and algorithms (at least ones of a mathematical nature, and, I would emphasize, not all algorithms are mathematical or numerical). Second are methods of “organizing human activity,” at least if they constitute a fundamental economic practice “long prevalent in commerce.”

What’s left out of the “abstract idea” category? The Court in Alice declined to say explicitly, but there are hints in its discussion of the 1981 Diehr decision in connection with the second Mayo step. The Court noted that Diehr had held a computer-implemented process for curing rubber was patent eligible, not because it involved a computer but rather because “it used that equation in a process designed to solve a technological problem in `conventional industry practice.” It reiterated: “the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” In contrast, the claims in Alice did not “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.”

The Court had discussed and distinguished the Diehr case before, in both Bilski and Mayo, but never on the basis that Diehr entailed a technological improvement. Thus, the Alice discussion of Diehr in terms of a solution to a technical problem is important new ground.

Hence there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny, including the Mayo second question for an “inventive concept,” if the claimant establishes that the claim is directed to a solution of a technological problem. This definition of abstract idea as excluding applied technology accommodates the case law treating pure mathematical statements, economics and finance, and schemes of a non-technical character (“methods of organizing human activity”) as “abstract ideas” that must be include additional elements to achieve patent eligibility (Mayo step two).

Is this shift in focus to “technological” an oasis of greater clarity? No doubt there will be arguments about what is technological and what is not. But there are at least three advantages to the verbal change. First, technology is the historic core of the patent system, especially given the Constitutional phrase “useful Arts,” which is 18th century terminology for “technology” in 21st century terminology. Thus, an inquiry about the technological is much less of an alien intruder than prior Supreme Court language about the abstract idea exception to Section 101. Second, evaluating the Section 101 abstract idea prohibition in terms of technological versus non-technological conforms to the language Congress used in Section 18 of the America Invents Act in setting up special PTO review of business method patents. Finally, a technology test aligns the United States standard with the language used in Europe and elsewhere to address exceptions to patent eligible subject matter.

253 thoughts on “The Supreme Court’s Alice Decision on Patent Eligibility of Computer-Implemented Inventions: Finding an Oasis In the Desert”

[…] Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here. […]

I wanted to commend 6 on asking some very good questions well down below (at 1.3.3.1.1.1.1)

“The legislative.

1. In your opinion does the constitution meaningfully limit the legislative’s authority to determine and write what is patent eligible, and if so, how (briefly if possible).

2. Does the judiciary determine just how (and whether) the constitution meaningfully limits the legislative’s authority to write what is patent eligible, and if so, are they empowered to narrowly interpret congress’s legislative attempts within those bounds (say perhaps in order to avoid a constitutional issue)?”

Such thoughtfulness, while rare, is welcome.

Here then, repeated for convenience, are my answers:

6,

Patent eligibility is entirely a statutory construct. As such, full authority rests with Congress – and Congress alone.

Congress can (and does) overstep its constitutional scope. Patent law is no exception.

Now, what can be done about any such overstep is particularly interesting. Most other areas of law are not constrained by a strict demarcation of authority as provided in the constitution, so in the other areas, the Court stepping in and “writing the map” does not present the same consequences as it does in patent law.

Note that there is a clear and unmistakable difference between “interpretation” and “re-construction” (i.e. writing). Prof. Hricik had a post awhile back presenting some useful links.

So to directly answer your questions:

1. The limitations in the words of the Constitution are NOT all that limiting, and should not be twisted to create “philosophical or pedagogical issues” with the Court only too eager to insert its fingers in the very “issue” it creates. (and deep shame to all the amici urging the Court to take such an activist role).

One area that this view is tied to the “argument” about stifling promotion.

That whole line of thought is nothing more than abject conjecture. One who has studied innovation (separate from invention) would readily tell you that such “a priori” views are pure rubbish. That line of bull is akin to being concerned with a pebble thrown into the spring-rain gorged Mississippi and being concerned about diverting the river’s path.

True limits present in the grant of authority are :
– Useful Arts (and yes, this does include business methods and software as categories)
– limited times (as opposed to Trade Secrets or Trademarks)
– exclusive rights (typically, forced licensing would fall out of this mandate)
– respective (ownership and vesting first in the inventor)

Note that “to promote the progress” is both laudatory [add.: that is, the phrase is merely a goal – see the pure rubbish note above] and that the meaning of “promote” is NOT limited to linear betterment. An analogy may be helpful here: The clause is not meant so much to pave a road, but more so to pave a parking lot (enabling in all directions, yes even backwards, as true innovation leaps about in all directions). The nature of innovation simply is NOT linear, and thus, to promote the progress (e.g., promote innovation), a more sophisticated understanding of innovation guides.

2. This is a trickier question, and as noted, interpretation and construction are too very different things. Further, the Court is NOT empowered (in the strictest sense) to EVER “interpret” as to stretch that “interpretation to be writing (hence, “implicit” writing is suspect), given the strict apportionment of authority in the constitution.

This is NOT to say that Congress cannot decide for itself to share its authority (as it did pre-1952 with the power granted to the courts to define “invention” by common law evolution – a power since rescinded; and with the elements of redress – still allowed – through the rules of equity in the judicial system).

Your direct answer: The Court is NOT permitted to rewrite the law to avoid a constitutional issue.

If the law as written by Congress is deemed to be in violation of the constitution, the appropriate measure of the Court would be to simply state so, rescind the law and put the ball back into the hands of Congress.

Well anon I appreciate your attempts to answer the questions. They happen to be questions that I’ve been asking you indirectly for nigh half a decade now, and I was “thoughtful” that whole time, but you’re finally getting around to at least attempting to answer them.

You seem to try to change the questions though.

For example I ask if the constitution meaningfully limits the congress’s power. You respond that the constitution is not “all that” limiting. And that’s fine, as your opinion. Though your ultimate answer to this inquiry is “yes” since you go on to enumerate a little list of limitations that you feel like are present. So I’ll simply take it as a “yes”. And I’ll take it that you think the little list of limitations are what you feel are the proper limitations to draw from the constitution.

Moving on to question two, you acknowledge that the question is “trickier” though it wasn’t meant to be tricky at all and I don’t think it is particularly tricky at all. It is only “tricky” imo if you’re trying to avoid answering simply. But you at least gave a “direct” answer that wasn’t actually an answer to the question since I never asked whether a court is permitted to rewrite the law to avoid a constitutional issue.

I asked whether or not the judiciary (rather than say, for instance anon, or anyone else) determines in what manner the constitution limits the congress’s ability to write what is patent eligible <— that's the main part of the question which you have yet to explicitly tell me about. I imply as of right now you do think it is the judiciary that does this since you went on to answer the "and if so" part that comes next.

But then we get to the "and if so" part of question two and you never explicitly tell us whether the USSC is empowered to narrowly interpret congress’s legislative attempts within the bounds that they themselves interpret from the constitution. You instead tell me that they're not "permitted" to rewrite the law to avoid a constitutional issue. Apparently you thought that the part of my question in ( )'s was the crux of the matter and what really needed to be answered. In fact what was in ( )'s is just a side thought. I was more concerned about the empowerment, or not of the judiciary to narrowly interpret congress's legislative attempts broadly, not only in the context of avoiding constitutional issues. Those are merely one reason they may narrowly interpret. I'm concerned about their empowerment generally. So perhaps you can address that. The empowerment, without telling us about the constitutional issue aspect.

In any event, frankly I rather agree with your overall conclusion of what "should have" been done if the explicit words were deemed to be in violation of the constitution. And at this point it is plain to see that the USSC doesn't believe the plain explicit words are constitutional without the modification of the judicial exceptions. But what "should" be done is not always done in the government, and us peons live on to pay the price. And I also understand why they didn't just hold it unconstitutional. It was their understanding at the time (some 60 years ago now) that it was not congress's intention to overrule their judicial exceptions. Had the court simply done ages ago what what you and I feel that they should have done in this sort of situation then we wouldn't be in this mess to begin with. Congress would have made the law better explicitly. Software wouldn't have any patents on it, probably very few "business methods" would, Alice would have never had a patent to begin with and everyone would be better off for it.

You know how the gov always prefers to kick the can of responsibility down the road if an easy alternative is presented. Especially if that easy alternative is to just let the status quo (the prior precedent here) reign!

See, “They happen to be questions that I’ve been asking you indirectly for nigh half a decade …,?i>” you have to go and try to ruin a nice dialogue with such a baseless accusation.

Ever since I started posting, I have been clear and consistent on my views and (proper) rendition of facts and law. Unlike yourself (with your whatever goes) and Malcolm (and his intellectual honesty is not required), I do post according to the ethical constraints I have sworn to and post with intellectual honesty.

That you do not like what I post simply does not affect how I post.

We both know that the opposite is true for many other posters.

Here too – you ascribe to over-personalize my reply, seeking to make mere “opinion” that which carries more weight than mere opinion. You seem unable or unwilling to grasp the notion that facts exist outside of whomever is bringing those facts to the discussion.

That is a critical error – and is an apparent trick employed so that you “feel better” about not paying any attention whatsoever to those facts that you find inconvenient. You are once again, not aiming for a true discussion as much as you are aiming to make your own soapbox view ascendant. But you seek to do this through fallacy. Sorry, but such inconvenient truths remain (and remain regardless of whether it is I that shares them with you).

That you here do not like my answer and seek to classify it as a side item only shows that you do not understand the question you ask. You want to hear a particular answer, regardless of the actual legal context. Sorry, as here too, my answer is the correct answer (and again, it is correct NOT because I say so, but rather, I say so because it is the correct answer). Whether you want to fight this or not, accept it or not, whine about it or not, is immaterial as to its veracity. Sorry 6, but that is just reality.

With that aside, I do hear you about “us peons” living with the result. I will distinguish though that actual discussions (albeit sharp ones) according to my advice (NOT the soapboxing CRP-ignore valid counterpoints, runaway and CRP again advice that others offer) will stand the best chance of making a difference.

Your final soapbox of “ Software wouldn’t have any patents on it, probably very few “business methods” would,” is plainly without merit.

Alright well perhaps I’m too hasty. If you want to have a “nice” conversation then perhaps you’ll simply answer my questions simplified.

1. In your opinion does the constitution meaningfully limit the legislative’s authority to determine and write what is patent eligible?

2. Does the judiciary determine just how, and whether the constitution meaningfully limits the legislative’s authority to write what is patent eligible?

Maybe that’ll make it easier for you to not get side tracked and hopefully be able to provide yes/no answers to the first parts of the former questions. Then, once you’ve given straight up yes/no answers to these easy parts of the questions then perhaps we can move one to the more complicated “and if so”s that I previously included.

I put too much on your plate and I respect that. Let’s go easy. One step at a time and not get into the super complicated too hastily.

How have you “put too much on my plate” and why would you need to ask “simplified questions,” when I have fully answered your non-simplified questions?

Your comment implies a lack of answer when no such lack exists.

On the other hand, you may not like or understand the answer I have given you – but as I indicated, the answer I have given you is the correct answer to your questions, and such is so, not because I said so (let’s stay away from the over-personalized fallacy), but I say so because the answer is objectively correct. It is correct regardless of it being me that says it or it being someone else that says it.

If you do not like it – tough nougies. You can always call your Congressman and try to change the statute (or get real busy and try for a constitutional amendment), but the correct answer remains the correct answer even if you don’t like the answer.

If you don’t understand a part of the answer, you would be better off losing the smarmy implication tactic and simply stating which part you don’t understand.

I should add that I most certainly don’t mind your answer brosef, I just never explicitly asked the question that your explicit answer is an explicit answer to. For that matter, I never even asked implicitly such a question. I frankly don’t care whether or not the court is permitted to “re-write” the law to avoid a constitutional question. For that reason I never asked the question

“Anon do you think the court is permitted to re-write the law to avoid a constitutional question?”

^that question was never asked.

I care only about the question I explicitly asked. But if you go ahead and address the simplified versions of the questions I’ve posted above, perhaps we’ll get to my slightly different question on this topic eventually.

6, one point. Anon is correct that congress delegated to the courts until ’52 to define the criteria for a patentable invention. They developed the exceptions, obviousness, double patenting and a few others.

His position, shared by David, was that common law authority ended in ’52 with the creation of 103, the division of 101 from 102/defenses to infringement in the revised statutes; and the limitation of 282 that statutorily confines invalidity to 102, 103, 112 and 251. 101 is not included.

Now the problem with this is whether this schema is constitutional. The scholars have discussed it and seem to agree that one cannot divorce patentable subject matter from validity as a constitutional matter. I think the Supreme Court would not want that issue presented to them for decision. The Federal Circuit does not consider the issue a serious one.

But, that said, the problem remains, in my view, to fit the judicial exceptions, including double patenting, into a specific aspect of 101. For all my disagreements with Rich, that was what he tried to do with all pre-52 judicial exceptions. If they were completely non statutory, he refused to recognize them.

I personally think the Supreme Court must recognize that 101 is the law. If it authorizes subject matter to be patented, that is the word of congress. Useful Arts provided no meaningful limit, as we discussed previously. What that meant or means is uncertain. What can be certain is that congress’s judgment controls and should be respected.

On the exceptions: laws of nature and products of nature are not new. The court has recognized such. Thus these exceptions are supported by the statutory language.

Under the historical interpretation of 101, business methods, printed matter and the like were deemed non statutory as they did not fall within any of the four classes.

Abstract was identified as a 112 problem in Morse. It does not operate as a limit on patentable subject matter — at least until perhaps Benson, Flook, Diehr, Bilski and now Alice. Until Bilski, the MOT, the traditional definition of Art was the proper way of excluding things like math. The en banc Federal Circuit got that one right.

The along came Bilski….

Now we are off on an adventure where we really do not know the limits on patentable subject matter anymore, and the statute itself is no longer even discussed as a limit. Now that, IMHO, is plain wrong.

Yes I’m aware of anon’s position. I’m also aware of how it differs from the USSC’s position. What I’m trying to do is walk with him through from some basics to see where his position really starts to differ from the official version from the court. Because you guys often kind of start in the middle so to speak. For example, you’re starting in the middle in your explanation of anon’s views. You guys don’t start by discussing whether the constitution does meaningfully limit congress’s ability to legislate, or whether the judiciary determines that. Those are both rather key. And you individuals are free to naysay the court on those two topics, but they’re the ones with power, and they may make a grab for even more power. If they do, then it isn’t up to us peons to set things straight, congress has to do that. And they generally do that by amendments to statutes or the constitution.

6, I assume you have read Marbury v. Madison. Anon and I have discussed it here a number of times, so we both are familiar with it.

Also, Golan v. Holder shows that congress can do an awful lot within the constitution, including withdrawing subject matter from the public domain. Thus they could possibly allow patents to people who discover products of nature. I don’t think there is a significant constitutional problem in that. I think the prohibition on patenting products of nature is a statutory problem, not a constitutional one. Properly, therefore, there really is no “exception” regarding products nature because products of nature are not statutorily eligible because they are not new compositions.

I don’t think there is a constitutional problem with patenting newly discovered laws of nature. I think that laws of nature are not new, even though not known, and for this reason, there is a statutory problem involved in claiming laws of nature.

It becomes a little bit closer question whether we can allow patenting abstract ideas. Patents of this nature retard the progress of the useful arts and therefore seem to be blatantly unconstitutional. But the Supreme Court is not applying this exception properly. They’re substituting the word “abstract” for “non statutory.” They shot themselves in the foot in Bilski when they held that business methods were statutory processes. That holding was ridiculous – and it totally ignored the Second Circuit and prior CCPA cases to the contrary.

“Thus they could possibly allow patents to people who discover products of nature.”

I think the supreme’s point is that while they may could, they’d have to do so explicitly to overrule their precedents. And even then the supremes would then look with a critical eye at the new law’s constitutionality.

Remember one thing that you (and anon and many lawlyers) routinely set aside. The business of the government, including the courts, congress, pressy, is always to GOVERN. That’s why we call them the government. And I know that probably doesn’t mean much to you (though it should moreso than the avg joe since you like playing games like ROME). When you’re governing the bottom line is to get through the day as best you can while organizing human actions as best you can (or to your whims depending on the power structure). And that’s what they did, and still do.

“I don’t think there is a constitutional problem with patenting newly discovered laws of nature.”

Well if you get congress to try it out I think there will be a PO and 9 justices to disagree with you.

“But the Supreme Court is not applying this exception properly. They’re substituting the word “abstract” for “non statutory.” They shot themselves in the foot in Bilski when they held that business methods were statutory processes. That holding was ridiculous – and it totally ignored the Second Circuit and prior CCPA cases to the contrary.”

Well that’s your opinion. And I respect you holding it. I don’t share it.

“when they held that business methods were statutory processes”

They didn’t strictly hold that. They simply held off killing them all off. There’s a difference between restraining yourself from killing a caged rabid dog and in explicitly making sure it is released and blessed to go around biting people. Which you would understand if you had power. And which you should understand anyway since you’re a lawyer.

“I do hope you recognize that understanding the law goes beyond what the Supreme Court says is the law (again, Prof. Hricik had a recent article on the number of times the Court has been, well, wrong).”

I have to tell you I do not recognize that. As any good peon does, I look to them for guidance. I don’t mind Hrick stirring up disrespect for the court, but his bar might. He hasn’t got so mouthy just yet that I feel the need to report his antics though. I can certainly understand why Hrick himself thinks the court is “wrong” though.

“Your lack of recognition is not controlling – surely you recognize that, right?”

It “controls” me. Other than that I don’t know who you’re referring to it not “controlling”. If you think a different recognition controls you, or some court you’re planning to argue to, that’s ok with me. You guys can sort that out amongst yourselves.

“You really have no clue as to the ethics of professional responsibility, do you? We have a duty to stir up if the court has engaged in an abuse of its powers and authority.”

Well let’s let him keep it up and the bar can sort that out for us. But I can pretty well assure you that just like EG has stfu after I held this over his head it will require little more than an email to Hrick with the email of his local bar attorney in the body to get him to stfu as well.

“As far as Prof. Hricik and any “mouthiness” – what exactly would you “report?””

I just told you above iirc. Stirring up disrespect for the court and its totally legit decisions that he disagrees with.

“When you don’t know the F you are talking about, pulling stuff out of your arse only makes it look like you enjoy pulling stuff out of your arse.”

I know, I don’t know why you and Hrick do that sht. It is embarrassing for you. It’ll be even more embarrassing for him to get a suspension for stirring up the peasantry agin respecting the courts as a result of it.

Different meaning to the word “control” 6 (you are doing that obsessive thing about control again)…

“get him to stfu”

LOL – see 6, that’s exactly the type of projection thing you do all the time. My reminding people of their ethical responsibilities was in a spirit of helping them, while clearly all you want to do is control them and make them stfu.

While I appreciate the ‘gentle tone,’ I do not appreciate the continued choice to ignore what I have presented to you and your continued misrepresentations as to law.

I have carefully – and patiently – explained why your view of printed matter does not accord with the law.

Your agenda agains business methods is also based on fallacy, and your desire to denigrate the process category as a sub-category to the hard goods category. Such is simply legal error that you refuse to listen to any reason and insist on the Ned-IMHO-law that aligns with your agenda.

Process is clearly a fully recognized category and clearly is not a handmaiden to the other three categories. You also (still) have not explained the statutory partial defense to business methods and the FACT that no such defense would be needed if your IMHO version were correct, as one would not need a defense (much less a statutory defense) to something that could not legally exist under the patent law. I have asked you politely to address this simple fact. That does not seem to illicit a resp

That does not seem to illicit a response from you – and your position fails on that point alone (there are, of course, other points that I can make – and have made – that are greeted with that same deafening roar of silence).

Of course, the entire underlying issue to all of this mess with 101 is the Court itself and its refusal to respect the words of the constitution and the separation of powers. The Court has seen that is can get away with implicit writing and in Alice has ventured into explicit writing with the addition of “technological” – term nowhere found in the statutory law concerning patent eligibility (and I will kindly ask you to use eligibility instead of patentability – there is a very real difference, and your comment above disregard that difference improperly under law).

and I also appreciate the apparent recognition of the 1952 Act – questioning whether the schema was constitutional is at least a step in recognizing that Congress did take the actions that up until that admission by you, you flatly pretended did not happen (raising the ire since you were attempting to rewrite history).

Now, if you want to have a discussion on constitutionality of the 1952 Act (while recognizing the veracity of what I have long informed you of), that might make for an interesting conversation.

Well anon, “abstract” is not really an exception to patent eligibility in my view. It’s an exception to the statutory requirements set forth in section 112, the requirements that one must describe an invention in enough detail that it enables one of ordinary skill in the art to make and use it. That is what the Morse case said was the problem with abstract claiming when one simply claims results. One has not enabled the full scope of that invention and to allow claim of that breath would be to retard the progress in the useful arts.

Abstract claiming has nothing whatsoever to do with eligibility. By layering on a requirement that a claim not be abstract without limiting the abstraction doctrine to §112 as provided in Morse, the Supreme Court essentially has said that we can decide, on an ad hoc basis, whether the claim is eligible. Note they never define what abstract is in their new jurisprudence, and totally ignore the Morse case and §112. As Scalia said in his dissent in American Broadcasting v. Aereo, a totality of the circumstances is not a test at all. Such a “test” allows a court ad hoc to determine whether case goes one way or the other. Such is not law, but equity.

Place your view aside for the moment, Ned (we both know that it makes more “sense” to align the notion of “abstract” – whatever that is, since the Court REFUSES to define it), but can you figure out why the Court did not rest on that part of the law? Why did the Court choose (and it was a choice) to pin its views on 101?

Need I remind you that even in equity, the Court gets to “write”** in patent law only at the discretion of Congress, who, statutorily provides for such equitable treatment? Congress could very well update the statutes and remove that portion of power it has granted to the courts.

**quotation marks are used because it is not even true writing of law, but merely applying equitable remedies that Congress explicitly permits.

Right MM. Tell us how computer programs are really natural laws. And how simulating human thought processes on a computer are not technical. Please fill in the audience on your wide breadth of ignorance.

And, it was a great description of you wasn’t it? Please tell us how computer programs are really natural laws. You used to tell us that all the time. I miss that one. Or please ridicule the Church-Turing Thesis some more.

A thought offered for those attorneys out there wondering whether fealty is to the Constitution or to the Court that is making things up.

Albeit no longer maintained, the link to link to law.cornell.edu
specifically preamble paragraphs [5] and [11] speak to a high er duty to the ultimate source of law – not the branch of government that might be trying to change the law beyond its authority to do so.

To wit:

[5]: While it is a lawyer’s duty, when necessary, to challenge the rectitude of official action, it is also a lawyer’s duty to uphold legal process.”

[11]: An independent legal profession is an important force in preserving government under law, for abuse of legal authority is more readily challenged by a profession whose members are not dependent on government for the right to practice.”

No one, it appears, wants to address the elephant in the room of the rectitude of official action negating the direct words of that branch of the government actually authorized to write patent law.

You yourself show NO signs or any willingness to engage in reason. You yourself HABITUALLY engage in point blank unethical treatment of law, facts, and of what others post.

Tell me Malcolm, when are you going to change from your own bankrupt posting style, and drop your short script tactics?

Drop the ad hominem
Drop the spin
Drop the mischaracterization of law (including the exceptions to the judicial doctrine of printed matter)
Drop the mischaracterization of facts
Drop the mishcaracterization of what others post
And above all, drop the Accuse Others Of That Which Malcolm Does.

I am honestly still confused. A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible? A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?

Maybe the question should be instead if the invention is a technological solution to a problem. Then again, why is a computer configured to make wonders not a technological solution to a problem?

In practice, I still wonder if the products of a company working in the tertiary sector (service industry) can benefit from patent protection, and so, how.

The definition of “technology” is right there next to the definition of “abstract” and right there next to the authority of the Court to write patent law in the first instance and insert this new word into the eligibility section of 35 USC 101.

A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible?

No. But the recitation of the generic term “medicine” in a claim is not patentable over the prior art, nor is it likely to rescue an otherwise ineligible claim (e.g., “A method comprising determining that a person has [insert new disease here] and administering medicine to said person”).

This is not very difficult stuff.

A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?

No. But the recitation of the generic term “telephone” is not patentable over the prior art, nor is it likely to rescuse an otherwise ineligible claim (e.g., “A method of using a telephone to communicate useful non-obvious information about [insert here]”).

I am honestly still confused. A medication is a solution to a health problem. People health is not a technology. Does it mean that medications are not patent eligible? A telephone is a solution to a communication problem. Communication between people is not a technology. Do you think telephones are not patent eligible?

Nobody said that a claim must recite a solution to a technical problem to be patent eligible. Instead, what was said was that a claim that recites a solution to a technical problem is not abstract. Those are not equivalent statements.

A specific medicine (i.e., chemical compound) is not an abstract idea, so you don’t even get to the second step of the analysis. Likewise, a claim to a telephone, so long as it includes specific components is not abstract, so again you don’t get to the second step of the analysis. It’s a different situation if you claim “A computer (or other apparatus) configured to facilitate communication between people.” Just ask Samuel Morse. Or Alice.

What exactly was the basis for the SCOTUS to have invalidated the patent in Alice? Their argument that this is not the type of thing that patents have been historically granted for is not a valid basis for the SCOTUS to invalidate a patent. The only basis by which they should be able to invalidate a patent is either statutory interpretation, which we all know they did not even read the 1952 Patent Act, or they must fall back to the actual clause in the Constitution and hold that the patent does not “promote.” So, their basis must be that they are holding that “abstract” patent do not “promote.” Yet they have never directly held this and given that they refuse to define “abstract” it is very shaky ground.

Moreover, for lower courts and the PTO it means that the holding in this case should be as narrow as possible. To hold a patent invalid at the Fed. Cir. under abstract is to say that it is unconstitutional because it does not promote and that it is abstract. That is a very, very high standard.

NWPA: So, their basis must be that they are holding that “abstract” patent do not “promote.”

Or they could be holding that protecting an abstract idea does not promote “useful Arts”.

Perhaps we should re-read Don Chisum’s original post. He notes that “useful Arts,” … is 18th century terminology for “technology” in 21st century terminology.

And … the Alice discussion of Diehr in terms of a solution to a technical problem is important new ground. Hence there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny … if the claimant establishes that the claim is directed to a solution of a technological problem.

Don argues that This definition of abstract idea as excluding applied technology accommodates the case law …

Well that is right European anon that another way they can be invalidating it is to say that it was not a “useful art.” But, it is a machine that people are paying for. It is hard to say that a machine that is part of a business is not a “useful art.” I think what the SCOTUS does to try and do an end around this is then throw in the natural laws exception and try to claim that we are really dealing with a natural law.

You know, in all cases, it is circular nutty logic. It does not represent the reality of the invention. It does not represent the reality of modern cognitive psychology and artificial intelligence. The reality is that processing information is an invention. That this invention is often listed as one of the most dangerous technologies in the world because of the potential to surpass human intelligence. And the reality is that there is no way to differentiate between Alice and a computer driving a car in a principled manner under the Church-Turing Thesis.

What it comes down to is that the SCOTUS is wrong and medieval in their thinking. The 1952 Patent Act was written to overcome these problems. If the SCOTUS had invalidated the patent under 103, we would all be in such a better place.

It is not so much that you misunderstood the American way, as much as it is that you (like many of the amici) are SO focused on advocating to get what they want – and partake in the mantra of “WHATEVER” and “the ends justify the means” that they lose sight of (and proper respect for) the Rule of Law.

And to top it off, the biggest hypocrite around, the one who whines incessantly about “grifters’ and how evi1 attorneys are is right there cheering this setting aside of highest value and openly pursuing the basest route possible – because it aligns with his desired philosophy- fully partaking in the evi1 of doing WHATEVER to get what he wants.

Without denigrating European law (hey, they are free to set their laws as they want to), the important – and critically overlooked – point here is that our law just is NOT their law.

Our Justices do not have the constitutional authority to redraw the map and insert this “technological” term into the patent eligibility section of our law. That is not their job. This is ultra vires and has NO force of law (even though the Royal Nine have decreed this to be the new law).

Another fault of Mr. Chisum is not emphasizing this point (although I will cut him some slack, as he does note that this piece is geared to the “on the ground” view only). One major problem with taking this is accepting the situation in the first place. One should read Sun Tzu and recognize that this piece is an abdication of a critical dimension and places one in a truly no-win situation. Upon arriving at the thought-to-exist oasis, no one should be shocked when the Justices merely declared that the scriviners were at it again and “abstract” will be moved to cover the newly styled applications.

Neither of those fields is a useful art, if you take the perfectly reasonable view that “useful art” is 18th-century-speak for “technology”.

The fact that people are paying for these improvements just means that they are economically valuable in their respective business fields, not that they are useful arts.

I do agree, however, that there are going to be borderline cases such as on expert systems and AI at some future date, where the courts are likely to struggle over whether the inventions are technological or abstract. It’s likely to depend on the facts of individual cases. Alice does not tell us whether such systems are abstract. Just that they are not abstract if they are designed to solve a technological problem.

“if the invention relates to the technology of the computer itself, as a computer.”

Not so – that’s another importation of EP law into US law where such just does not exist in US law.

If you want that change, the proper manner here in the US is the legislative process. Yes, I know, that means being a stickler for the separation of powers doctrine, but hey, you know, that’s kind of an important doctrine to use over here. There are even some Federalist papers written explaining why the doctrine is important. Even treatise writers and academics can understand this if they want to.

Second, even though the history-deniers try to hide this, Congress EXPLICITLY acted in 1952 – in direct smackdown to the activist anti-patent Court – to state that a new use of an old machine was patent eligible.

Period.

So either correction of the double fallacy suffices to defeat the argument presented.

Please do not misunderstand Mr. Chisum, who has not rendered a fully accurate meaning to the term – which is not locked into the 18th century (as is known). This is but one aspect as to why the oasis that he sees is merely a mirage.

He remains thirsty and will be sorely disappointed as he will not arrive at the place he thinks he sees.

It’s a long thread which won’t see the traffic (anymore) that this thread will see, but no one (yet) has stepped up to find where “technological” is in the actual patent statutes sections discussing patent eligibility.

That, and no one has ventured forth with a (non-circular) definition of the term.

Until these two things are met, no real self-respecting attorney should give much weight to that flickering (and ever-hope for) image of relief.

Night, The only basis by which they should be able to invalidate a patent is either statutory interpretation, or they must fall back to the actual clause in the Constitution and hold that the patent does not “promote. “

I fundamentally agree.

The Supreme Court lost its way in Bilski when it “ruled” that business methods were statutory. Having said this, and this may be dicta, they had no further legal basis for denying the claims in Bilski. Nor did they have a legal basis for denying the claims in Alice.

But I would like to note that for 100 years and more the business method doctrine existed until “overruled” by State Street Bank, by a Federal Circuit panel of three judges, with Judge Rich writing for the court. In those historical cases, the business method doctrine was held to be unpatentable because business methods were nonstatutory – not being one of the four classes: Art, a machine, a manufacture, or a composition.

The Supreme Court really threw a monkey wrench into the law when it gave its view in Bilski that business methods were statutory. That dicta has to be reversed or corrected. This whole notion of some extra-statutory exclusion is pernicious if not ridiculous. Just think, not being tied to the statutes, and providing no definition or guidelines, no one has any idea what abstract means. How can this be?

A method is a mere abstract idea if it can be carried out by the brain of a human being, whatever the time it would take to this brain to achieve the result attached to said method. The mere fact that a computer or a computer program would make it faster or easier is, in this respect, totally irrelevant. What can be achieved by the sole implementation of a human brain is, by very definition, non technical both in its nature, its application and its result.

So a machine that can do what a human brain can do is abstract? That is facially just absurd. That assertion is anathema to science and modern philosophy. I’d put you in the category of evolution deniers. Really you are that ignorant.

you totally misunderstood my point. I just said that if a human brain can implement the claimed method (even if it is long and not easy compared to the same implementation by a computer) then most certainly the claimed method is fundamentally a mere mental abstract idea.

If a method can be carried out by thinking of the brain alone, it is completely limited to the manipulation of mental content.

A computer program however cannot operate on mere abstractions, it operates on tangible information, which incidentally is based on abstraction or is capable of description by abstraction.

A computer does not make operation of your or anyone’s brain, i.e. the manipulation of mental content, any faster or easier because it simply does not operate there.

Any claim that can be as such performed by a human brain would of course be an attempt to claim a mere abstract idea. A claim directed to a mechanism for doing what a brain does, like playing chess, far from being a claim to an abstraction, is a claim to something wondrous.

One should differentiate between the thing which is operative in reality, and how it is described or claimed. Certainly some things are nor described and/or claimed properly, bit that does not mean that the things is unpatentable, it just means that the applicant has not filed an allowable patent application.

Good luck Anon2 getting through to his type. I’ve written what you just wrote many times. What you get back is a violent denial and threats. This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.

Night, you post is typical of you. Rather than discuss the merits, attack the opponents personally. You do this constantly. Ditto anon.

MM, RandomGuy, 6 and me seem on the same side in this discussion. I think we all discuss issues with argument and case law. The problem is that you and anon respond to US with personal attacks. All the GD time.

Now I have asked anon to stop attacking MM, and MM to stop attacking anon.

Can I ask you to do the same with me, and with anyone else you disagree with here. Keep it on the merits, please. Support your position with solid arguments and citations to authority.

Name the last time that Malcolm or 6 or Random Examiner used actual case cites.

You will not because you cannot.

Then for yourself – who does at least try – you need to not pervert those cases as you have rampantly done with the Russell case, or ignoring follow on changes in law (the 1952 Act and the split and constraining of the Court’s ability to set the definition of invention – or any derivatives – through the tool of common law evolution.

According to you. Who has a great track record of coming out on the correct side of 101 determinations of late! Go team anon! 0 for 4 now is it? Should we do another so you can carry on btching about how illegal it all is and this that and the other?

anon, I suggest your wagging of your fingers at others is slightly arrogant given that you obviously fail to understand the law yourself. You often state so and so is the law, when it is not the law. This places you in the same position regarding ethics as you accuse others.

I give you one example of your misunderstanding of the law. The cases involving business methods and printed matter all held them to be nonstatutory. Your refusal to accept this fact is part of your problem. It is almost as if you can read a case and refuse to understand its holding because it does not fit into your belief system. But that is what I see here with you anon.

Anon2 A computer does not make operation of your or anyone’s brain, i.e. the manipulation of mental content, any faster or easier because it simply does not operate there.

Nobody is arguing that computers “make our brain’s faster.” The argument is that computers are old and have long been known to function as proxy’s for otherwise ineligible information-processing methods that would otherwise be carried out by human brains (or by human brains in combination with pencils and paper).

I sincerely apologize for this violent response. If you need medical attention, dial 911.

Nice to meet you. I have never accused you of violent tendencies nor have I ever attacked you. Sweeping that aside.

I honestly am curious about what you think.

If one were to invent something like a mechanical abacus, and suppose for argument sake it was new and unobvious in its construction, would it as such fall under ineligible subject matter because its sole utility is derived from its processing of information?

Or do you think patentability here is more of a question of the sufficiency of the disclosure and claims, and hence it could be patented if described and claimed properly?

If one were to invent something like a mechanical abacus, and suppose for argument sake it was new and unobvious in its construction, would it as such fall under ineligible subject matter because its sole utility is derived from its processing of information?

If its “new and unobvious construction” was claimed in physcial terms then it would certainly be eligible for patenting. I’ve stated as much repeatedly and plainly hundreds of times for, oh, about six or seven years now. And probably several times already in this thread. Certainly I’ve never indicated that the opposite was true so I’m not sure why you are asking me this question.

you totally misunderstood my point. I just said that if a human brain can implement the claimed method (even if it is long and not easy compared to the same implementation by a computer) then most certainly the claimed method is fundamentally a mere mental abstract idea.

If the claim actually reads on mental steps performed by a functioning brain… then of course it is directed to a mere mental abstract idea.

To the extent the human brain actually CAN implement the method AS CLAIMED, I agree it is abstract. But it takes little to remove what is claimed from the abstract to the realm of the tangible real world.

Now if I literally claim AN APPLE and someone says I real am claiming the APPLE TREE…. well I guess I cannot argue with them because there is no logical argument which can prevail in the face of a rejection of logic.

Let me share one of my favorite words that wrecks the “mental steps” doctrine attempt at rebirth. Realize that the spelling is little off (my autocorrect corrected to that spelling and I kind of liked it):

Anthropomorphication

What people (the anti-software people) want to do is to NOT read the claims typically at issue as required by law.

That is, understanding the claim NOT to read on a human and a human’s thoughts – (the typical strawman is take claim elements and pretend that the ENTIRE claim is being performed in the mind). Rather, the claims at issue are to be read and understood by a person having ordinary skill in the art to which the invention pertains, informed by the specification.

The typical attempt at using the mental steps doctrine wants to try to obfuscate the FACT that machines really do not think. In fact, Malcolm (aka MM, aka a whole army of sockpuppets over at PatentDocs), actually posted that he thinks that machines do in fact think.

Now granted, with Alice and the abrogation of the changes in law that the 1952 Act enacted, you can be sure to see more attempts at resurrecting the Mental Steps doctrine – and just as assuredly, the basic rubric of reading claims will be obfuscated and attempts to portray the claims as ENTIRELY in the mind will be made – no matter how lacking in merit.

Well, I am still convinced that my test is the correct one. This is not because you have “cosmetically” adapted a basically mental process by introducing one or more so-called “computerized” steps (which could render, I agree, the implementation of the process faster and/or easier) that you have changed the fact that fundamentally your process still remains something that could be performed mentally as well.

But, then read the opinions by Tarantula and you see the same stuff. Can’t wait to see the latest appointment by Obama. I am sure they will have to come to the oval office (maybe over the phone) swear to burn the patent system down in exchange for their life long job.

Patenthot, I fundamentally disagree that the mental steps doctrine is what is at issue here. If that were the issue, limiting the claims to machine implementation would solve the problem.

The abstractness that the Supreme Court seems concerned with is subject matter not within the statutory classes. While the courts has only discussed math and fundamental economic principles, printed matter is also not with the statutory classes. Allowing patents on printed matter seems fundamentally contrary to the statutory framework that would protect such using copyright.

Regardless, patents are for machines, manufactures a compositions. Art, now process, relates to making and using machines, manufactures and compositions.

Printed matter and business methods and systems are not any of the four classes. I have been quoting the original cases here for a few weeks. If you would like their cites, just ask. The form of analysis is whether the novel subject matter in the claim is ineligible. If it is, the claim is unpatentable regardless that the claim recites old statutory subject matter.

As an aside, this was Rader’s problem with Prometheus. He, like Rich, was convinced that if a claim recited eligible subject matter, even old and conventional, it passed 101 — move on to 102/103.

Time and again, the Supreme Court rejected such nominalism. That is why Rich and Rader were consistently overruled.

Simply wrong Ned – the Judicial Exceptions – as properly understood as to what they are per the Court apply REGARDLESS of statutory category.

Remember that in the very case before us in Alice, it was stipulated by both parties that the statutory category requirement was met – the Courys exceptions – ALL of them including “abstract” (whatever that means) can apply regardless of statutory category.

You are only kicking up dust with your bizarre attempted differentiations – and clearly poor treatment of the process category.

It is supremely evident how badly you are contorting the law in order to squeeze your agenda into the picture. It is somewhat painful to behold.

anon, Simply wrong Ned – the Judicial Exceptions – as properly understood as to what they are per the Court apply REGARDLESS of statutory category.

I am forced to agree, anon, that Supreme Court seems to apply the so-called judicial exceptions regardless of the statutory classes and regardless of §101.

However consider, Myriad specifically tied the product of nature exception to the “newness” requirement of section 101. Also consider that Flook tied the “math” exception to the “newness” requirement of §101, essentially holding that math, like a law of nature, always existed even though discovered by the inventor.

But the Supreme Court in Bilski did not even attempt to tie its holding in that case to anything in §101, and in doing so totally ignored prevailing law that business methods were nonstatutory. But having “held” that business methods were statutory, the only other basis for denying the patentability of the claims in Bilski were because they were attempting to claim a business method that was notoriously old – just as they said. Something notoriously old cannot be patented, can it? But the statutory grounds preferably is §102.

First and foremost, please stop with the dead-wrong view that business methods are nonstatutory. This is plain and obvious error, given that Congress -writers of the statutory law, PLAINLY allowed for business methods (you cannot square a provided defense for certain business methods with this notion that business methods were not statutory, as you arrive at a unworkable paradox – one does not need a defense for something not allowed in the first place). Please stop your wrong carpet-bombing CRP.

“I am forced to agree, anon, that Supreme Court seems to apply the so-called judicial exceptions regardless of the statutory classes and regardless of §101.”

Bingo.

Your attempts – and the attempts of the Court – to find “implicit” writings simply cannot withstand a critical scrutiny.

Thus, the question that I have asked (and have been wrongly mocked for): How deep the rabbit hole of “implicit?”

(sub-note: you really need to stop thinking that the Universe is an unchanging, constant thing, as this is still messing with your understanding of the timeless factor of 101 jurisprudence)

As to looking at other portions of the statute that the Court could have hung its “implicit” words, well, the Court chose otherwise. One must deal with the words chosen by the Court and one is not at liberty to change those words (explicitly or implicitly), right? – you know, that whole “do as we say, not as we do” thing…

“Art, now process, relates to making and using machines, manufactures and compositions.”

Fundamentally wrong.

All you do here is perpetuate the Story/No-process-patents-English-system fallacy that only begrudgingly allows process patents – but only as a sub category of the hard goods.

This is nothing more than the MoT in sheepskin.

The Court in Bilski has rejected this with its holding (9-0) that MoT is not a requirement.

You are doing that “picking-and-choosing” thing again to create Ned-IMHO law aligned with your world view. That loss of objectivity rather detracts from your credibility.

And for argument’s sake. this rendition of yours (““Art, now process, relates to making and using machines, manufactures and compositions.“) still fails to capture the Alice decision, given that there was unquestionably use of a machine. You need “more” to pervert the Alice decision into your “Well-it’s-outside-of-the-statutory-classes” position. Further, there is no doubt that the system in Alice was integrated, leaving that “buzzword” unavailing as an answer here.

anon, I have Supreme Court authority in my side and I can quoted to you if you want. But I do agree, that Bilski seem to overrule this long prevailing Supreme Court case law when it held that the claims in the Bilski case were statutory processes.

Bilski was a abomination, anon, a flat out abomination. You do realize, of course, by not tying patentable subject matter into the statutory classes in a rigorous manner that they were tied prior to Bilski, the Supreme Court essentially rewrote the law such that it now decides what is patentable subject matter on a case-by-case basis using its “abstract idea” exclusion, that it has not defined and cannot define because it has no clear basis in any statute, unless the Supreme Court essentially reverses itself and restricts “abstract” to be nonstatutory subject matter.

But until they do, what Supreme Court is doing is almost unconstitutional, because I fundamentally agree with you that Congress has the power to write the laws and Supreme Court has to follow the law unless it is unconstitutional.

Congress since 1790/1793 has provided §101 in its current state. We have nearly 200 years of interpretation of that statute which determined which subject matter was statutory and which subject matter was not. Among the things that were found non-statutory were business methods. Also printed matter. Also math.

Then along comes Bilski and finds that business methods are statutory, and then declares a broader exception to statutory subject matter known as “abstract.” But this undefined abstract essentially swallows the whole. Anybody can see that. Now we do not know what is eligible or what is not eligible until Supreme Court tells us. We can guess. But we do not know.

I answered your question by noting that it was a bogus question. You cannot expect a better answer. You need a proper question. To reach that proper question, open your eyes and read (really read) the lessons that I have already provided to you, from the Set Theory explanation pertaining to Russell to the proper understanding of the action of Congress in 1952 to strip the power from the courts to define “invention” by the power of common law evolution and in its place creating 103.

These are not new concepts, and I fully expect you to apply yourself in earnest study of the knowledge that I have shared with you.

Congress did not intend to overrule the printed matter doctrine and the business method exception, both based on the same line of cases that focused on the novel aspects of the claimed subject matter to determine that novel subject matter non statutory.

Yet, sir, we find ourselves adrift in chaos because your iconic hero of ’52 chose to deem those cases non binding dicta, even though they were not dicta.

What really got to Rich was the notion that one would look to the “novel” portions of a claim to determine eligible subject matter. THAT was his nemesis. It was his consistent effort since he was on the CCPA to force that genie back into the bottle. Judge Rich was the archetypal hero of the nominalist movement, led by IBM, and which includes none other than you, anon.

Mr. Chisum: Thank you for sharing this real-world focused analysis. Well done. I’ve been in the software trenches for a long time, and my take isn’t much different. When claiming, as a rule of thumb, try to be specific with respect to the context of a software related invention, and try to be broad with respect to what makes the invention useful. Write a claim that a software engineer can read and somewhat understand but can’t easily design around.

Mr. Crouch: Thank you, for providing a venue where people can share thoughts and ideas on fresh and important issues.

As to the what-is-abstract issue, it’s a shame that the legal framework is so muddied. Why should computer algorithms per se, divorced from real world problems other than bare computing, not be patentable? Some algorithms are applicable to an unlimited number of problems. For instance, a new machine-learning algorithm can potentially be applied across all areas of science. Why should the inventor of that new and useful algorithm, which is completely useless anywhere but in a digital information processing machine, be denied ownership? The Alice decision appears to say that things like sorting algorithms, search algorithms, encoding algorithms, etc., are not patentable on their own merits. Throw them at a rubber curing process, and now they’re patentable? That’s like saying someone who invents a new type of hardware logic gate should only be able to patent that gate when that logic gate is used, for say, controlling a machine that makes cotton candy.

Someday in the future, a patent regime will recognize that “tangible” information is a resource (perhaps by then one of the most valuable resources in a mind based automated world) and that novel and unobvious ways of manipulating that tangible resource to create value will be one of the most important drivers of wealth and the economy.

The first country or countries which recognizes this and allows, as subject matter, tangible machines (i.e. software running on a machine), new and unobvious and sufficiently described to manipulate tangible information (utility) will be an economic and innovative powerhouse and will have a head start on backwards countries still hesitant to grant software and computer implemented business method patents.

Pre-emption policy is not a valid limit on the property right of invention, and it will serve to hobble innovation.

The industrial revolution and the patents which operated during that explosion of productivity followed far after the iron age. Hopefully it wont take us as long to progress from the “information age” to the next technological revolution (and the patents which will accompany it).

Healthcare is a need, therefore, people are “entitled” to it (n’est pas?),

property rights for healthcare innovation would mean individuals would be able to freely trade (or not) for the fruits of their own effort (tisk tisk) and exclude others from unjustly benefiting from their innovation,

recall Europe is socialist as compared to America (or at least what America formerly was…) so

on policy grounds alone healthcare/biomed IP diametrically opposes “to each according to his need, from each according to his ability” and thus patenting for this kind of art suffers.

Your comments shine a very bright spotlight on the path that leads directly to the Jane syndrome. (and Malcolm, please take the time to understand that the veracity of this statement NEGATES the charge of red-baiting).

And yet, there are those that insist on dissembling with notions that the patent system somehow is NOT under attack.

anon — so then the patent itself hasn’t been “revoked,” ruled “ineligible,” or otherwise rendered unable to support new claims (assuming new claims were otherwise available, e.g. via con, reissue, or ?)?

Also, In re Russell, 48 F.2d 668 (C.C.P.A. 1931)(Printed matter, the novelty, was nonstatutory – not being an art, machine, manufacture or composition, the index cards upon which the system was employed were old).

Math too is abstract in the very same way — not being a machine, manufacture or composition.

From Prometheus and Alice we see the Supreme Court has fully bought into the analysis of the above cases: if the novel subject matter is nonstatutory (abstract), and the statutory subject matter old, the claim as a whole is nonstatutory (unpatentable).

It really is funny that you want Mr. Chisum to read law that is no longer valid, given the 1952 Act, or is clearly mischaracterized by your agenda driven mistakes, yet you refused to check out his chapter 22 (repeatedly) when I asked you to in our discussions of the state by state quagmire effect (re: marriage and community property).

I assure you anon, that the PTO for one thinks the printed matter doctrine is alive and well.

State Street Bank relied in material part on the PTO removing Hotel Security from the MPEP. The people who did that should be lined up and sh0t — or the equivalent — being granted the IPO man of the year award.

It is high time now that State Street Bank has been overruled on almost every score that the PTO restore the business method exception to the MPEP by citing to Hotel Security, Guthrie and In re Patton.

The MPEP cites to In re Miller for the printed matter exceptions. For pities sake, cite to In re Russell, you mor0nic f00ls. Can’t you recognize that anything written by Rich is suspect?

Incredible Ned that you are trying to pull the line back to about 1900 again. It certainly is true that you are joined by a SCOTUS and Fed. Cir. that is almost completely ignorant of science and modern philosophy.

The grand inquisitors are out with their matches and sticks. Unbelievable how bizarre this country has become when money can trump reason and education.

We really are back to the Scope Monkey Trial era. We have regressed due to the disparity of income problem and regression back into fundamental religion. Your assault on our enlightenment is part of the regression.

The Chiz: an inquiry about the technological is much less of an alien intruder than prior Supreme Court language about the abstract idea exception to Section 101.

I see it as two sides of the same coin. Disembodied “technology” is abstract. I have an idea about a machine that collects all or a part of of all the information about you that is useful to determining the likely kind of heavily processed fast food that is most likely to satisfy your tastes and least likely to cause you to develop a giant tumor in your stomach. That’s not “technology”. That’s an abstraction. I’ve invented no patent-worthy “technology” until I’ve reduced that machine to practice (constructively or otherwise), proven that it works, and described to you the necessary and (critically) novel structural features that allow it to achieve the function I’ve described.

Second, evaluating the Section 101 abstract idea prohibition in terms of technological versus non-technological conforms to the language Congress used in Section 18 of the America Invents Act in setting up special PTO review of business method patents. Finally, a technology test aligns the United States standard with the language used in Europe and elsewhere to address exceptions to patent eligible subject matter.

True enough, but I seem to recall the EPO also confusing itself into accepting the recitation of “new” information processing “functionality” as “new technology” when, in fact, such a claim represents nothing more than the use of old technology (a programmable information-processing machine) for its universally acknowledged ancient purpose (processing information it has been programmed to process).

If we tie eligibility to the promotion of technology, we must accept that once a claimed (or unclaimed) technology falls into the public domain it is no longer “technology” for patent purposes. Information for example, should never be confused with “technology” itself, and that necessarily includes information of incredible importance to researchers, engineers, and physicians on the cutting edge of “technology.”

Any workable definition of “technology” will need to include the types of restrictions that I’ve alluded to above or else we’ll end up right back in square one with people claiming their “ideas” for “new information” that an old information processing machine can process. The status quo doesn’t promote advances in “technology”. It promotes advances in clever claim drafting and grifting off a broken, over-burdened patent system.

As always, there are many alternative fallback positions for those obsessed with empowering those self-entitled, invariably well-off and typically litigious folks who insist upon their right to earn a living merely by shoving paper at the USPTO.

Information processing “innovations” are very, very different from innovations in, say, the development of stronger/lighter/more durable materials for bridges and sewers (not that anybody really cares about that stuff — after all, our economy is entirely based on selling information, or so we are endlessly told by the s0ftie w0ftie crowd). They need to be treated very, very differently by our patent system.

Malcolm can you say more about your understanding of how technology is assessed at the EPO. You put “new technology” in quotes. Is that because you are quoting verbatim from a document written within the EPO?

Let us remind ourselves that the EPO does not elide 101 eligibility and 102/3 patentability.

On patentability, EPC Art 54 and 56, the EPO asks what in the claim are the features that confer novelty over a specific prior art starting point document. For patentability, the claimed subject matter must employ at least one “technical” feature to solve a “technical” problem ie deliver a “technical” effect.

After 30+ years of this mantra, hundres of cases per year, no Binding Precedent, the EPO has by now worked out pretty well, where it is going.

For all of the good intent of MaxDrei’s post, he still gets the basic fact wrong that without state decisis at some level (his “no Binding Precedent), he has the opposite of “knowing where the law is going” explicitly because of the lack of being bound – tomorrow being a new day, literally anything may go, and quite possibly ZERO connection to today’s understanding.

Not sure Paul that magic mushrooms need be invoked. anon is like those who told us in the past that it is a “basic fact” that the Earth on which he stands is the centre of the Universe and that the sun revolves around it. No need for close observation or measurement, because any chump can work that out from first principles and commonsense alone.

You are truly clueless MaxDrei, as it is you that proclaims a view that does not exist in reality.

paul’s comments align with my view – not yours. In past discussions we have fleshed out the reality that there IS some real degree of binding (the nest level up) – and that is a fact that BINDING is what provides the clarity of expectations.

There is no such thing as an absence of “Binding Precedent” because the very definition of such a term would expressly mean the lunacy that paul points out as requiring the ingestion of magic mushrooms.

That you feel compelled to then think that I am the butt of the joke only highlights your inability to employ any level of critical thinking. You use a term and advocate a philosophy that is not doing what you claim it to be doing – and the binding and clarity comes DESPITE your position – not because of it.

I agree that EPO eligibility is a safe harbor. This is exactly what I posted a couple of days ago.

But, the bigger question for much of software is what is technical? I think a recent fed. cir. case where Tarantula held an expert system was not technical and merely simulated human thought is a good example of something that is technical, but is trying to be pushed over to non-technical by ignorant judges.

Maybe you should remind everyone exactly what this “expert” (LOL) “system” protected and how this “expert” (LOL) “system” was claimed.

Pretty much everybody’s computer has a lot of useful “expertise” on it. Does anyone believe that we’ll promote more “expertise” if we treat everybody’s computer as a “new” patent-worthy machine after we’ve stored our “expertise” on it (my “expertise” is even retrievable from my computer system upon my request — incredible, isn’t it?!?! and third parties can access it, too, if they know the password!! seriously, will ultra-modern wonders never cease???).

Your statements are so bizarre MM that they don’t merit a retort. Machines that come with built in expertise? OK. Sure. Simulating human thought is just the topic of most Ph.D.’s in cognitive science, but I am sure the fed. cir. judges know better than scientist using their 1200’s era thinking.

I never talked about machines with “built-in expertise”. I’m talking about an old programmable digital computer that I custom modified with my own “expert” information, just like millions of people do every day.

OK. You just added that “own expert” to the machine. Wow! Being able to do that has been the subject of intense research for 60 years in A.I. And, most researchers would say we have not gotten very far at being able to add our own expertise to the computer. But, I bow to you and the judges and your medieval reasoning. The judges are holding the matches and the sticks.

The question must be asked in the United States is whether the claimed subject matter is a new or improved machine, manufacture, or composition, or a new or improved process involving the making or using one of these.

However, since Supreme Court thinks it has to right to just make things up and to deny patents to subject matter it has declared to be statutory, then why not come up some abstract new term such as technology to simply judicially rewrite §102.

LOL – Why? Apparently, the Supreme Court does not feel so constrained.

Oh, that’s right, it’s that “do as we say, not as we do” thingie….

A problem (and surely no the only one) is that “do as we say” is simply not possible, since the Court refuses to explain what they say, as they REFUSE to define “abstract.”

Refuse, I say, refuse. (said in the best Foghorn Leghorn tones)

“new or improved machine, manufacture, or composition, or a new or improved process involving the making or using one of these.”

For someone who recently expressed the importance of the statutory categories (and in the IMMEDIATE post hearkens to them) – your blatant rewriting is blasphemous.

“simply judicially rewrite §102. Why do we even entertain these crazy thoughts?”

Realization appears to be dawning on Ned Heller. But the question is, will he be able to overcome that obsessive fealty with the Royal Nine and be able to separate out the error of his own obsessive agenda, and finally, FINALLY be able to do as I have long asked of him: put the blame of the 101 mess squarely where it belongs: with the Royal Nine.

DanH “There’s a fundamental difference between the examples you give and the situations in Bilski and Alice. Modulation and encryption techniques, which can certainly be (at least partly) implemented in “computers” are useful for improving digital communications between two end points. Hedging and intermediation techniques are not useful in improving the operation of networked computers. The former are useful applications of abstract ideas; the claims in Bilski and Alice are simply computerization of abstract ideas.”

Of course, your claims will fail if you attempt to claim the mathematical operations underlying either modulation or encryption techniques without applying them in some useful way.

How refreshing to see an honest attempt to find a fallback position (even it’s not a new one but one that we’ve been discussing here for years). But will the computer-implementer crowd accept these seemingly reasonable limitations on what they can protect? And what would they say about a requirement that they provide some demonstration of efficacy for their “applied math”, i.e., scientific evidence of an actual improvement in, e.g., computational speed or security as achieved on a number of different platforms reasonably related to whatever claim scope is being sought?

Oh, so much labor is involved in thinking about these things! The Great Don Chisum will need some serious nappy time after we’re through.

You mean like those great medical patents that have done so – at the time of filing?

Please, please, please keep trying to pretend that there is no difference between the manner in which novel drug compositions are obtained and enforced and the typical computer-implemented jnk we see here on a regular basis.

Also, I’ll remind everyone that I’ve long been on the record as disagreeing with the submission of previously undisclosed data to prove a previously undisclosed “unexpected” result. You’re welcome to join me in advocating for that misguided law be changed.

Or you can continue on as your usual gibbering hypocritical l00neytunes self. Golly, I wonder which path you will choose.

And what would they say about a requirement that they provide some demonstration of efficacy for their “applied math”, i.e., scientific evidence of an actual improvement in, e.g., computational speed or security as achieved on a number of different platforms reasonably related to whatever claim scope is being sought?

I’m not sure what this does for us. An “actual improvement” over what? I don’t think the degree (or lack thereof) of improvement in some quantitative performance metric is the issue. If you want to patent a technology that doesn’t work very well, then knock yourself out. I’m talking about differences in kind, just as the Supreme Court is. If the claim is directed to solving a particular technical problem in a particular way, using a computer, then you’re probably OK; if the claim is directed to nothing more than the computerization of some concept that exists independently of its computerization than you’re probably not. Note that the former category excludes those claims that broadly claim a “solution,” with nothing more.

DanH I’m not sure what this does for us. An “actual improvement” over what?

The closest prior art, for instance.

I don’t think the degree (or lack thereof) of improvement in some quantitative performance metric is the issue.

It’s an issue in pretty much every other field of endeavor. Last time I checked people don’t rush to the patent office to claim stuff that is inferior to existing stuff.

Note that the former category [solving a particular technical problem in a particular way, using a computer] excludes those claims that broadly claim a “solution,” with nothing more.

Okay, but surely we can provide some guidelines as to what “more” is required. At a minimum, some scientifiic evidence that the technical problem (which implies some quantifiable shortcoming in the prior art) was actually solved (i.e., improved upon) by the inventor, in addition to the express recitation of the novel combination of elements necessary to achieve those unexpected improvements. And in all information-processing cases, the starting point has to be that (1) all data is collectable unless it’s proven that it couldn’t be collectable (in which case just claim the new structure that allows for that data collection); and (2) all data is useful in some context; and (3) your claim can’t hinge on the fact that you recite a new context unless the art previously taught that such data was useless in that context.

A major issue right now with all the functionally-claimed information-processing sludge in the system is that the “functionality” is pre-determined by the claim language itself. It’s effectively self-enabled and, at least prior to Alice, understood to be eligible merely because, “hey, you can put it on your desk … after somebody else spends the time and money to build it while I watch a baseball game and figure out who to sue next.”

The great Don Chisum: Those decisions provided no definition of an “abstract idea” (or “law of nature”) and little direction on, precisely, how much “more” was required for the transformation.

Apparently when it comes to subject matter eligibility Don Chisum was born yesterday. But we knew that already because we previously saw him pretend to not understand what was at stake in Prometheus v. Mayo.

How about some novel structure recited in the claims, Don? You think that wouldn’t have helped with the [oldstep]+[newthought] claims in Mayo?

Don Chisum, like John Duffy and a few other commenters with many industry friends who have earned a fat, fine living off filing jnky information processing methods, seem to have great difficulty communicating the basics: these Supreme Court cases aren’t nearly as wacky as the lower court and PTO decisions that led applicants like Alice and a thousand other grubby grifters to file their jnk in the first place.

It is an ongoing mystery as to why the textualist Justices have been so willing to interpret these judge-made exceptions liberally and expansively.

Here’s one possbility, Don: the Judges see that the patent system is prone to lawyerly manipulation like no other system because it essentially allows self-intereted patent lawyers to write their own laws about what people are allowed to do, which are binding on everyone in the country, with the only “check” in the system being an understaffed patent office that is frequently “directed” by one of these same self-interested patent lawyers. Second, everybody who wasn’t born yesterday knows that Thomas and his fellow “textualists” are only “textualists” when they need to be. Geez, man, where have you been?

This really wasn’t so difficult to figure out, Don.

Then watch the great Don Chisum play fast and loose with the Supreme Court’s own words. The Court notes: the Court itself recognizes that it must “tread carefully” in construing its judge-made “exclusionary principle” to patentability “lest it swallow all of patent law.” Nothing terribly controversial or new there. People should always be careful about the arguments they make. That applies equally to incredibly greedy patentees like Prometheus. Right, Don?

If you are a patent holder, that’s more than just a bit worrisome. If you are opposed to patents, it’s cause for dancing in the streets.

Because in Don’s world, apparently, it’s one or the other. You either are “opposed to patents” or you are a patent holder. News flash, Don: there’s a lot of us who believe in a strong, functional patent system who are simply disgusted with what has been flowing out of the PTO and also with guys like you who seem very intent on kicking up dust clouds so people look the other way.

That may be fine for today, but tomorrow the lower courts and the Patent Office will have to “labor” – and labor mightily – to try to figure out the precise contours of the category.

Because it’s really, really, really hard to say “Recite some novel structure in your claims instead of trying to protect new functionality.”

“Then watch the great Don Chisum play fast and loose with the Supreme Court’s own words. ”

“Right, Don? “If you are a patent holder, that’s more than just a bit worrisome. If you are opposed to patents, it’s cause for dancing in the streets.” Because in Don’s world, apparently, it’s one or the other. ”

It seems to me that the majority of the things you are attributing to Chisum here and arguing with him about (in absentia), actually came instead from Duffy’s post over at Scotusblog.

But you keep arguing “Don, right Don?, not hard to figure out, Don?, because in Don’s world” as if he wrote all the stuff you quoted.

Let me offer a prognostication based on all of the past interactions of points of law, my comments, and Malcolm’s comments (especially when the points of law are addressed by the honorable Mr. Chisum).

To paraphrase Malcolm’s insightful (or is that inciting…?) view: “Chisum is a quack and a grifter“

Fed. Circ. Asked To Review USPTO Indefiniteness Test
A patent applicant on Thursday urged the full Federal Circuit bench to review a panel decision backing the U.S. Patent and Trademark Office’s standard for indefinite patents, asserting that a recent U.S. Supreme Court ruling called for unity between the agency’s indefiniteness test and that of the courts.

” a novel and unobvious solution to a technical problem is not an “abstract idea,”

Question — Thus, for inventions that are Alice vulnerable should practitioners include in the applications discussions of the prior art and arguments (and maybe proofs) of why the inventions are not obvious over that prior art — to better avoid a 101 rejection?

– Methods for performing mental acts, mathematical methods, computer programs, etc are not patent eligible. But only to the extent that your patent application or patent relates to those things “as such”. (Articles 52(2) and (3) EPC). To be patent eligible requires something more.

– The “something more” is that there needs to be something technical.

– A computer is something technical. So maybe the computer program will be patentable if you say that it runs on a computer?

– Yes, that gets you past the hurdle of Articles 52(2) and (3). But it’s not enough. It still leaves you with a different, further hurdle.

– The different, further hurdle is your invention must also involve an inventive step. That is, it must not be obvious to a person skilled in the art. (Article 56 EPC.)

– The European approach to inventive step is to look for a non-obvious technical solution to a technical problem. In assessing it, you exclude non-technical aspects of the claimed solution. What’s left are the technical aspects, and they have to be non-obvious.

– Merely saying that your program runs on a computer is obvious. So if that’s all that’s left after you exclude the non-technical aspects, then the invention is not patentable.

I “get” you like your law. That’s nice. It is not our law.
I “get” you may want our law changed to match your law. That too is nice. We have a proper method for changing law – it’s called the legislative process. This process is especially important for a specific topic of law that was so important that the actual designation of authority to write and make up that law was captured in our Ultimate Law: the constitution.

While your comment of comparison “are nice,” they only serve to obscure a much more important issue impacted by this case.

Is you do want to continue in an effort to help, perhaps you can supply a meaningful and non-circular definition of “technological,” as it appears that the void in agreed upon meaning of that term is a serious detriment to avoid another “trap” that we Americans have with our legal system: we do not allow laws that are void for vagueness.

Thank you for your comparative inputs and your respect for our law and the differences in our law that our rightly appointed branch of government, the legislature, have put in place.

Ned, my understanding is one of the reasons for the creation of the Fed Cir was to overturn the 2nd circuit line of cases. When Marshal was being confirmed to SCOTUS he was asked about patents – ‘I’m from the 2nd circuit – we don’t believe in patents.’ Was something like the response.

Ned’s habit of engaging in lawlessness is now well known. His fealty is not to the constitution (where his oath as an attorney directs him) but rather to the Royal Nine – at least so long as the Royal Nine align with his agenda. When he perceives that they do not, only then does he question them (for an immediate example, so his now-disappeared rants against the lack of defining “abstract” in Bilski not more than two weeks old).

In contrast, the claims in Alice did not “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.”

I think your analysis is spot on, Jason. There was a brief discussion in the comments for another thread, where someone proposed that modulation and encryption techniques, for example, were merely applied math and thus presumably ineligible. My answer there:

There’s a fundamental difference between the examples you give and the situations in Bilski and Alice. Modulation and encryption techniques, which can certainly be (at least partly) implemented in “computers” are useful for improving digital communications between two end points. Hedging and intermediation techniques are not useful in improving the operation of networked computers. The former are useful applications of abstract ideas; the claims in Bilski and Alice are simply computerization of abstract ideas.

Of course, your claims will fail if you attempt to claim the mathematical operations underlying either modulation or encryption techniques without applying them in some useful way. But these and many other examples of software-implemented technologies should not present any eligibility problems under Alice, unless they are claimed too broadly.

Surely printed matter is also a form of abstract. See, In re Russell, 48 F.2d 668 (C.C.P.A. 1931) that relied on printed matter to be nonstatutory for its holding even when claims with old statutory index cards.

1. In your opinion does the constitution meaningfully limit the legislative’s authority to determine and write what is patent eligible, and if so, how (briefly if possible).

2. Does the judiciary determine just how (and whether) the constitution meaningfully limits the legislative’s authority to write what is patent eligible, and if so, are they empowered to narrowly interpret congress’s legislative attempts within those bounds (say perhaps in order to avoid a constitutional issue)?

Patent eligibility is entirely a statutory construct. As such, full authority rests with Congress – and Congress alone.

Congress can (and does) overstep its constitutional scope. Patent law is no exception.

Now, what can be done about any such overstep is particularly interesting. Most other areas of law are not constrained by a strict demarcation of authority as provided in the constitution, so in the other areas, the Court stepping in and “writing the map” does not present the same consequences as it does in patent law.

Note that there is a clear and unmistakable difference between “interpretation” and “re-construction” (i.e. writing). Prof. Hricik had a post awhile back presenting some useful links.

So to directly answer your questions:

1. The limitations in the words of the Constitution are NOT all that limiting, and should not be twisted to create “philosophical or pedagogical issues” with the Court only too eager to insert its fingers in the very “issue” it creates. (and deep shame to all the amici urging the Court to take such an activist role).

One area that this view is tied to the “argument” about stifling promotion.

That whole line of thought is nothing more than abject conjecture. One who has studied innovation (separate from invention) would readily tell you that such “a priori” views are pure rubbish. That line of bull is akin to being concerned with a pebble thrown into the spring-rain gorged Mississippi and being concerned about diverting the river’s path.

True limits present in the grant of authority are :
– Useful Arts (and yes, this does include business methods and software as categories)
– limited times (as opposed to Trade Secrets or Trademarks)
– exclusive rights (typically, forced licensing would fall out of this mandate)
– respective (ownership and vesting first in the inventor)

Note that “to promote the progress” is both laudatory and that the meaning of “promote” is NOT limited to linear betterment. An analogy may be helpful here: The clause is not meant so much to pave a road, but more so to pave a parking lot (enabling in all directions, yes even backwards, as true innovation leaps about in all directions). The nature of innovation simply is NOT linear, and thus, to promote the progress (e.g., promote innovation), a more sophisticated understanding of innovation guides.

2. This is a trickier question, and as noted, interpretation and construction are too very different things. Further, the Court is NOT empowered (in the strictest sense) to EVER “interpret” as to stretch that “interpretation to be writing (hence, “implicit” writing is suspect), given the strict apportionment of authority in the constitution.

This is NOT to say that Congress cannot decide for itself to share its authority (as it did pre-1952 with the power granted to the courts to define “invention” by common law evolution – a power since rescinded; and with the elements of redress – still allowed – through the rules of equity in the judicial system).

Your direct answer:The Court is NOT permitted to rewrite the law to avoid a constitutional issue.

If the law as written by Congress is deemed to be in violation of the constitution, the appropriate measure of the Court would be to simply state so, rescind the law and put the ball back into the hands of Congress.

6, if if the promotion of Science and the useful Arts is a statutory limit on Congress’s power regarding patents, such promotion is also a statutory limit on Congress’s power regarding copyrights. Since we grant copyrights on a lot of subject matter that has nothing to do with Science and the useful Arts, I don’t think the Supreme Court can ever go down the path that you suggest.

The limit on the scope of patentable subject matter is expressed in §101, by Congress. Now that the Supreme Court is ignoring §101, and deciding itself what is patentable subject matter, the Supreme Court has essentially usurped the power granted Congress by the Constitution.

anon, IBM’s idea of limiting patents to technology is just one way of rewriting 101. I agree with you that going that was would be a mistake.

Another way to rewrite 101 is to exclude subject matter the SC does not like even if otherwise statutory. Call it abstract. That is simply a label without a definition of what abstract is. Such, I agree anon, is usurpation.

I think the court has to actually limit itself to the laws that Congress has passed. If what is new is non statutory, then say that that is the problem. Then at least we can figure out what the problem is. But this new jurisprudence by exception is plainly wrong.

“6, if if the promotion of Science and the useful Arts is a statutory limit on Congress’s power regarding patents, such promotion is also a statutory limit on Congress’s power regarding copyrights. Since we grant copyrights on a lot of subject matter that has nothing to do with Science and the useful Arts, I don’t think the Supreme Court can ever go down the path that you suggest.”

Ned I have forgotten what wacko basis our current copyright system is supposedly based on. Practically that whole thing is likely unconstitutional as well, but let’s set it aside since the the courts don’t seem to think so.

“The limit on the scope of patentable subject matter is expressed in §101, by Congress. Now that the Supreme Court is ignoring §101, and deciding itself what is patentable subject matter, the Supreme Court has essentially usurped the power granted Congress by the Constitution.”

I don’t necessarily think that it is solely expressed in 101. Didn’t the court just now say something about this subject in Alice?

Yeah Ned open up your Alice corp decision and see the citation to the art. 1 of the constitution on page 6 of the main decision. They def seem to be citing to the constitution for part of the underpinnings of the judicial exceptions existing.

They cite to myriad, mayo and the constitution here in Alice.

To them, you cannot have people claiming the 3 categories that are excluded or because to them (though not to anon) allowing such claims to issue and be enforced would frustrate the constitutional purpose.

Just because the Court makes a passing reference to the constitution does NOTmean that proper authority has been established.

See my explanation to 6. Yes, Congress can overstep its bounds. But yes as well, the Court can overstep its bounds. Pure conjecture on a laudatory portion of the constitutional grant of authority simply does not give the Court any authority to whip out its own pen, don its own version of being a scriviner and write patent law.

The Court clearly maintains authority to determine if Congress stepped over the constitutional line – but only on items of true constitutional limitation. And even then, what happens after that should NOT also step over the line.

I wouldn’t say it is my “next target” anon. I have no plans to personally attempt to crack that ice or go out of my way to encourage others to do so. It’s just one more political thing I’d like to see happen.

Well, anon, there is a difference between copyright and patent rights. Copyrights were a common law right in England. Patents were purely statutory, and limited by the Statute of Monopolies.

Repeal all copyright statutes at the Federal level, and common law copyright would be restored, no longer being preempted, especially if Congress expressed that intent.

In other words, Congress could provide a federal registration system for common law copyrights somewhat like trademarks. In this manner, the subject of copyright is not limited in scope by any “purpose.”

Not so patents. The cannot exist without a statute. Thus the “purpose” clause may actually limit congress’s power here.

But so far, everything they have said on this score is pure dicta. If congress has overstepped its authority, then the statutes can be held unconstitutional. But until then, I agree, the word of congress controls and there really are no “exceptions” except those which are consistent with the statutes.

Steve, I think you are spot on once you assume that the claims in Alice were statutory – and if they were statutory Bilski, they must be statutory in Alice. So the only proper question to ask is whether the claimed subject matter was old or obvious.

In this shows why Bilski was so fundamentally wrong when it found that business methods were statutory. This holding was contrary to 100 years of case authority to the contrary.